WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Magnum Corporation Berhad v. Cheam Heng Ming
Case No. D2002-0510
1. The Parties
The Complainant is Magnum Corporation Berhad, a company incorporated in Malaysia under the Companies Act 1965 and having its registered office at 33rd Floor, Menara Multi-Purpose, Capital Square, No. 8, Jalan Munshi Abdullah, 50100 Kuala Lumpur, Malaysia.
The Respondent is Cheam Heng Ming of No. 5, Lorong Tun Razak, Raub 27600, Pahang, Malaysia.
2. The Domain Name and Registrar
The dispute concerns the domain name <magnum4d.com> (the said Domain Name) registered with Tucows, Inc. of 96 Mowat Avenue, Toronto, Ontario M6K 3M1, Canada.
3. Procedural History
On May 31, 2002, the Complainant submitted a complaint by e-mail to the WIPO Arbitration and Mediation Center ("the Center") for a decision in accordance with the Uniform Domain Name Dispute Resolution Policy ("the Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy ("the Rules") and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules). On June 11, 2002, the Center received the hardcopy of the same from the Complainant.
On June 4, 2002, the Center sent the Acknowledgment of Receipt of Complaint by e-mail to the Complainant, its authorized representative and the Respondent. On the same day, the Center sent a Request for Registrar Verification to the Registrar. The Registrar confirmed by e-mail with the Center that it was the Registrar of the said Domain Name and that the registrant was the Respondent.
On June 11, 2002, the Center found that the Complainant had satisfied the formal requirements of the Policy, the Rules and the Supplemental Rules.
On June 12, 2002, the Center sent the Notification of Complaint and Commencement of Administrative Proceeding (the Notification) by post/courier (with enclosures) and by e-mail (with the complaint but without attachments) to the Respondent and transmitted by e-mail the complaint (without attachments) to the Complainantís authorized representative. It also extended a copy of the Notification to the Internet Corporation for Assigned Names and Numbers (ICANN) (with the complaint and attachments) and the Registrar (with the complaint but without attachments). The said Notification set the formal date of the commencement of this administrative proceeding as June 12, 2002, and required the Respondent to submit a response to the Complainant and the Center within 20 calendar days from the date of receipt of the Notification, i.e. by July 2, 2002, failing which the Respondent would be considered to be in default.
On June 13, 2002, the Center received by e-mail the Respondentís communication as to his correspondence address. On the same day, the Center acknowledged receipt of the same.
On June 23, 2002, the Center received the response from the Respondent by e-mail.
On June 24, 2002, the Center transmitted the Acknowledgement of Receipt of the Response to the Respondent and the Complainant's authorized representative by e-mail.
On June 27, 2002, the Center received an e-mail from the Complainant's authorized representative who enquired whether the Respondent had opted for a single-member panel or a three-member panel for this administrative proceeding. On the same day, the Center requested confirmation from the Respondent as to whether he would like a single or a three-member panel.
On June 28, 2002, the Center received a reply by e-mail from the Respondent who opted to have a single-member panel for this administrative proceeding.
On July 4, 2002, the Center received the hardcopy of the response from the Respondent.
As both parties had elected to have the dispute decided by a single-member panel , on July 5, 2002, the Center appointed Mr. Hariram Jayaram (the Panel) to be the panelist after receiving a Statement of Acceptance and Declaration of Impartiality and Independence from him and sent a Notification of Appointment of Administrative Panel and Projected Decision Date to the Complainant's authorized representative and the Respondent and copied it to the Panel by e-mail. On the same day, the Center sent the Transmission of Case File to the Panel.
The Panel finds that the Center has discharged its obligations and responsibilities under the Rules and will issue its decision based on the statements and documents submitted and in accordance with the Policy, the Rules and the Supplemental Rules and principles of law, which the Panel deems to be applicable.
4. Factual Background
In its complaint, the Complainant states that it was incorporated in 1968 and was granted a license to promote, operate and manage 4-digit numbers forecast betting in Malaysia and commenced trading on April 1, 1969. It was initially known as Empat Nombor Ekor Sendirian Berhad (ENE) but upon being listed on the Kuala Lumpur Stock Exchange on or about October 31, 1969, it changed its name to Empat Nombor Ekor Berhad. Thereafter, it changed its name in 1977 from Empat Nombor Ekor Berhad to Magnum Corporation Berhad. To substantiate the fact that it has been in active operation since 1969, the Complainant has produced as exhibits documents which give the figures relating to the after tax profits of ENE from 1969 to 1973 and of the Complainant from 1977 to 2000. The term "4-digit numbers forecast betting" is descriptive of a particular form of gaming, wherein a combination of four digits is selected by an individual, who is then allowed to purchase as many combinations as he/she chooses subject to the rules of probability, which will then go through a random selection process through computer manipulation. Once the random selection is drawn, results of the draw will be announced through all major local newspapers, the Complainantís website and the Complainantís outlets. Individuals with matching combinations will be entitled to various categories of monetary rewards. The word "4-digit numbers" is a direct translation of the word "Empat Nombor Ekor" in the Malay language. This also happens to be the original name of the Complainant from the date of its incorporation until 1977. Both "4D" and "ENE" are abbreviations referring solely to the 4-digit numbers forecast betting, which is the Complainant's core business, in the English and Malay languages. It has obtained the registration of the mark identified as "MAGNUM-ENE", which is a word mark. The said mark has been registered with the Registry of Trade Marks, Malaysia as of December 1, 1997, in respect of insurance, financial affairs, monetary affairs, real estate affairs, all included in Class 36. From the date it commenced trading, i.e. April 1, 1969, the Complainant has carried out its core activity, i.e. 4-digit numbers forecast betting, using the marks "MAGNUM", "4D", "MAGNUM 4D", "ENE" and "MAGNUM-ENE", both as a part of its business activities as well as for advertising purposes. The said marks have been heavily used and advertised in several different forms: The mark "4D" of the Complainant is clearly printed on each betting ticket purchased at its outlets. Result draws that occur three (3) times a week throughout the year are advertised in all major newspapers throughout Malaysia, namely the "Star", the "Sun", the "Nanyang Siang Pau", "Sin Chew Jit Poh" and "Tamil Nesan" which have a wide circulation. The purchase of 4-digit numbers forecast betting and collection of winnings are conducted at the outlets of the Complainant. Each outlet has a signboard featuring its marks, namely "MAGNUM", "4D", "MAGNUM 4D", "ENE" and "MAGNUM-ENE". It has 477 outlets throughout Malaysia. Posters that advertise the Complainant's business are put up in all of the Complainant's outlets. The Complainant also promotes its activities through posters bearing the marks "MAGNUM 4D", "M" and "4D". An average of 10,000,000 Chinese New Year gift packets bearing the marks "MAGNUM ENE", "4D" and "M" are distributed yearly to customers and staff. The marks also appear on the Complainantís various websites, namely "www.magnum4d.com.my", "www.magnum.com.my" and "www.lmb.com.my". The mark "MAGNUM 4D" in itself appears in promotional posters and on the Complainant's websites. The Complainant spends an average of USD$170,000 per annum on advertising using the marks "MAGNUM", "4D", "MAGNUM 4D", "ENE" and "MAGNUM-ENE".
The address of the Respondent as provided by the Registrar and the Complainant is 201 Camachile Drive, Ayala Alabang Village, Manila, Philippines. On June 13, 2002, the Respondent has given his correspondence address to the Center as No. 5, Lorong Tun Razak, Raub 27600, Pahang, Malaysia.
5. Parties' Contention
The Complainant contends that through the continuous and extensive use of the marks "MAGNUM", "4D" and "MAGNUM 4D", each of the said marks has become synonymous with the Complainant and its business. As such, the use of the mark "MAGNUM 4D" can only lead to one inescapable conclusion, i.e. it is a reference to the business of the Complainant. The use of the marks "ENE" and "MAGNUM-ENE" establishes the goodwill enjoyed by the Complainant in the marks "4D" and "MAGNUM 4D", as both "ENE" and "MAGNUM-ENE" are the Malay language equivalents of "4D" and "MAGNUM 4D". The use of the mark "MAGNUM" or "MAGNUM-ENE" together with the mark "4D" is equivalent to the use of the mark "MAGNUM 4D". This use furthers the goodwill enjoyed by the Complainant in the marks "4D" and "MAGNUM 4D". The Complainant has the common law trademark rights in the unregistered word mark "MAGNUM 4D". The said Domain Name is confusingly similar to the "MAGNUM 4D" mark of the Complainant. The use of the said Domain Name by the Respondent will give rise to confusion amongst visitors to the Respondent's website (whether it is operational or otherwise), reduce the goodwill the Complainant enjoys in the mark "MAGNUM 4D" (and its associated marks) and amount to the Respondent passing himself off as the Complainant. It submits that it is sufficient for the Complainant to have made actual use of the unregistered trademark. It has demonstrated actual use of the mark "MAGNUM 4D" through extensive advertising of the same to associate the said mark with its business operations. Through the exhibits detailing the Complainantís business operations, its registered "MAGNUM-ENE" trademark and the substantial use thereof, its advertising of the materials displaying the words "MAGNUM", "4D", "MAGNUM 4D" and annual reports and statements showing after tax profits, the Complainant is commonly known by the Malaysian public as a reputable and long-standing provider of four-digit gaming activities. Therefore the said Domain Name is confusingly similar to all of its marks or alternatively to each or any one of them, i.e. "MAGNUM", "4D", "MAGNUM 4D", "ENE" and "MAGNUM-ENE".
At the time of this complaint and before any notice was given to the Respondent about the same, the Respondent is not making use of, or has not made demonstrable preparations to use, the said Domain Name in connection with a bona fide offering of goods or services. Searches leading to his website have shown that there has been no sign whatsoever of him making preparations to use the said Domain Name to make any bona fide offer of goods or services. What appears instead upon visiting his website is a message indicating the page requested for is currently unavailable. He has failed to demonstrate preparations to use the said Domain Name for a legitimate purpose. On the other hand the Complainant has through its active business existence and promotional efforts acquired legitimate rights in the said Domain Name. Consistent with the Respondent having failed to demonstrate preparations to use the said Domain Name is the fact that no non-commercial use of the same seems to be made by him. The website is not available for use. Since the said Domain Name comprises marks which are commonly associated with the Complainantís activities, it is imminent that Internet users will be deceived into believing that the inactive website is owned and run by the Complainant. The Respondent has failed to show that he is commonly known by the said Domain Name or that he is making a legitimate non-commercial use of the same without misleading customers as to the Complainantís trademarks or activities. The Complainant has established itself as a well known provider of gaming services. It has made legitimate use of both its registered and unregistered trademarks in advertising its gaming services. Thus, any or all references made to the marks "MAGNUM" or "4D" are necessarily associated with its reputable business operations. There was never any consent given by the Complainant to the Respondent allowing the use of the said Domain Name comprising marks that have been used by the Complainant to promote its business and for which it has earned a good reputation. Its common law rights to the marks comprising the said Domain Name were in existence well before the Respondent registered the said Domain Name.
The said Domain Name should be considered as having been registered and used in bad faith. The present administrative proceeding is based on more than one act demonstrating bad faith on the part of the Respondent, namely:
- his initial use of the said Domain Name;
- his subsequent passive holding of the said Domain Name;
- him having taken steps to provide false contact details; and
- his initial registration of the said Domain Name.
The Respondent had initially made use of the said Domain Name by way of copying and/or extracting the contents of the Complainantís website and by using the website as the source of the contents displayed on his website. In doing so, he displays his awareness of the existence of the Complainant, its good reputation and its website. His actions in this respect at best demonstrate an intention to rely on the Complainant's good reputation without first making known his objectives and seeking authorisation from the Complainant and at worst, demonstrate his intention to pass himself off as the Complainant. In doing so, he has registered and made use of the said Domain Name in bad faith. To support this contention, the Complainant submits copies of the Respondent's website program code that shows a code which is intended to extract the contents of the Complainantís website and display them (the said contents) within the Respondentís own website. The Respondent has carried out unauthorised copying/extraction of the materials from its website in order to pass himself off as the Complainant. The Respondent's actions must necessarily lead to a finding by the Panel that, on a balance of probabilities, the Respondent has registered and used the said Domain Name in bad faith. The Respondent has passed off his own website as the Complainant's website, thereby demonstrating bad faith on his part in both registering and making use of the said Domain Name. The Complainant has over a period of thirty (30) years established goodwill and reputation in the eyes of the public in Malaysia. For the past several months there has been no activity whatsoever on the Respondentís website. As such, the current passive holding of the said Domain Name by the Respondent constitutes use by him of the said Domain Name in bad faith. He has taken steps to provide false contact details in breach of Clause 18 of the Registration Agreement, thereby demonstrating bad faith in registering the said Domain Name. It is impossible to determine the accuracy or truth of his registration details. There is an inconsistency in the contact information that the Respondent has provided for the purposes of registering the said Domain Name. Initially, at the point of registering the said Domain Name, the Respondent had registered the address in Raub, Pahang with a corresponding telephone number. Subsequently, he has registered an address and telephone number in the Philippines. When the Raub telephone number was called, it was confirmed that the Respondent had answered the call. The discrepancy in the information supplied by him for the registration of the said Domain Name in dispute gives rise to the inference that he is trying to conceal his actual location. It appears that he may, on a balance of probabilities, be taking active steps to avoid detection. Because of the reputation of the Complainant in Malaysia and the fact that it has branches throughout Malaysia including Raub, the Respondent would in all probability have known of the Complainant's existence at the time he registered the said Domain Name. With such knowledge, he had undoubtedly demonstrated bad faith from the very moment he obtained registration of the said Domain Name. He has given inaccurate registration details and failed to correct the same, demonstrating a behaviour on his part to mislead parties who for legitimate reasons require access to such information. Despite the fact that the Respondent may, according to his registration details, have an address in the Philippines, the Complainant has interests in subsidiary companies in the Philippines called Magnum International Securities Inc. and Philippines Racing Club, Inc. Even though the Respondent may contend that the Complainant has no trade mark presence in the Philippines, it is the case that it does have interests in companies located in the Philippines. In addition to being well known in Malaysia, the Complainant has also established a business presence in the Philippines. All of the circumstances pertaining to the present administrative proceeding must be closely examined and such examination would necessarily lead to a finding of use of the said Domain Name by the Respondent in bad faith.
In support of the above contentions, the Complainant relies on the following authorities:
- Plaza Operating Partners, Ltd. v. Pop Data Technologies, Inc. and Joseph Pillus, WIPO Case No. D2000-0166 (June 1, 2000);
- Bennet Coleman & Co. Ltd. v. Steven S. Lalwani, WIPO Case Nos.D2000-0014 (March 11, 2002) and Bennet Coleman & Co. Ltd. v. Long Distance Telephone Company, WIPO Case No. D2000-0015 (March 11, 2000);
- Cux, Inc. v. DomainNamesAvailable, WIPO Case No. D2000-0972 (September 27, 2000);
- Hamilton Sundstrand Corporation v. Internet Realty Group, WIPO Case No. D2000-1302 (January 18, 2001);
- Hewlett-Packard Company v. Cupcake City (HewlittPackard-Dom), National Arbitration Forum Case No. FA 0002000093562;
- Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No.D2000-0003 (February 18, 2000); and
- Aeroturbine, Inc. v. Domain Leasing Ltd., National Arbitration Forum Case No. FA0002000093674.
In his response, the Respondent contends that the Complainant has no trademark or service mark registration of "magnum4d.com" in Malaysia or the United States of America. The trademark is only for MAGNUM-ENE and in Malaysia only. The Complainant has websites at "www.magnum.com.my" and "www.lmb.com.my", both with the country code .my. There is no confusion because of the country code. Applying the Complainant's logic, both <magnum.com> and <lmb.com> should also belong to it. The Respondent has registered the said Domain Name to direct Internet users to his personal website. He did not conceal his identity or provide false contact details. His e-mail address at <email@example.com> is active. The address, No 5, Bibby Lane, Raub, Pahang 27600 Malaysia, is his old address. At no time did the Complainant contact him or e-mail him. As to the Complainant's claim that he answered the telephone call, he replies that he did not. One of his household members must have answered the said telephone call. He did not try to sell the said Domain Name back to the Complainant or anyone else. His website is unavailable, so how could the Complainant claim that he copied or inserted the code to his website? Any hacker could have done it. The Complainant could have falsified the same itself to strengthen its case. The said Domain Name was registered innocently and is not being used in bad faith.
In support of his contentions, the Respondent relies on the following authorities:
- France Telecom v. Les Pages Jaunes Francophones, WIPO Case No. D2000-0489 (August 21, 2000); and
- Oasis Stores Ltd. v. Everquest Corp. S.A., WIPO Case No. D2002-0098 (March 25, 2002).
6. Discussion and Findings
6.1 Elements to be proved
To succeed, the Complainant must establish under paragraph 4(a) of the Policy that
i) the said Domain Name is identical or confusingly similar to a trade mark or service mark in which it has rights;
ii) the Respondent has no rights or legitimate interests in the said Domain Name; and
iii) the said Domain Name has been registered and is being used in bad faith by the Respondent.
6.2 Identical or confusingly similar
The Complainant claims rights in the unregistered service marks "MAGNUM" "4D" and "MAGNUM 4D". The Respondent, on the other hand, contends that the Complainant does not have rights to <magnum4d.com> since the Complainant has registration only for the service mark "MAGNUM-ENE" in Malaysia. The Panel is unable to accept this contention of the Respondent as valid. No doubt the Complainant has registration for the service mark "MAGNUM-ENE" in Class 36 for inter alia insurance, financial affairs, monetary affairs and real estate affairs but the abbreviation "ENE" stands for "Empat Nombor Ekor", an expression in the Malay language to stand for "4-digits". The abbreviation for "4-digits" is "4D". The core business of the Complainant is its forecast betting service connected with 4-digit numbers. The Complainant has used its unregistered service marks in the course of its business and has produced ample evidence to show extensive use. There can be no doubt that the Complainant enjoys goodwill and reputation in the said marks from its use on its 4-digit gaming business.
It is the Panel's conclusion that the said unregistered service marks have taken on the character of common law marks and have become distinctive of the Complainant.
When compared with the registered service mark "MAGNUM-ENE", the said Domain Name is confusingly similar. The second level domain (SLD) is also identical to the Complainant's common law mark "MAGNUM 4D".
6.3 Respondent's rights or legitimate interests in the said Domain Name
The Complainant asserts that it has not given any consent to the Respondent to use its marks as part of the said Domain Name. In his reply, the Respondent says that he has registered the said Domain Name to direct Internet users to his website. He does not explain why he has chosen the expression "magnum4d" for his SLD. He is not commonly known as "magnum4d" and the said Domain Name has no nexus or connection with him.
He has failed to show that he has made preparations to use or that he has used the said Domain Name commercially or otherwise.
The Panel concludes that the Respondent has no rights or legitimate interests in the said Domain Name.
6.4 Registration and Use in Bad Faith
The Complainant's allegations as to the Respondent's bad faith are as follows:
- He has provided false contact details to the Registrar in order to avoid detection;
- His initial use of the said Domain Name was copying and extracting the contents of the Complainant's website and displaying them in his website;
- Despite having prior knowledge of the Complainant's existence and reputation in Malaysia and the Philippines, he has chosen for his SLD the Complainant's common law marks; and
- He has not provided evidence of use of the said Domain Name.
As to the first allegation, the Respondent maintains that one of the addresses which the Complainant is complaining about is in fact his old address. His e-mail address, as provided by him, remains active. As to the second allegation, he says he has not done the copying. It could have been the work of a hacker or the Complainant itself.
However, the third and fourth allegations of the Complainant remain unchallenged. The Respondent has not provided any explanations to rebut the said allegations. The Panel is left to conclude that they are true: The Respondent has chosen his domain name in bad faith. The lack of evidence as to the current or proposed use of the said Domain Name does weigh heavily against the Respondent.
The Panel finds that the Complainant has proved the element of bad faith against the Respondent.
The Panel requires that the said Domain Name be transferred to the Complainant.
Dated: July 19, 2002